IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF OHIO

EASTERN DIVISION

THE BIG IDEA COMPANY,

Plaintiff,

vs. Civil Action 2:11-cv-1148

Magistrate Judge King

THE PARENT CARE RESOURCE, LLC,

et al.,

Defendants.

OPINION AND ORDER

This matter is before the Court with consent of the parties, 28

U.S.C. § 636(c), for consideration of defendants’ Motion to Disqualify

Counsel (“Defendants’ Motion”), Doc. No. 6, plaintiff’s Memorandum in

Opposition (“Plaintiff’s Response”), Doc. No. 7, and defendants’ Reply

to Plaintiff’s Memorandum in Opposition (“Defendants’ Reply”), Doc.

No. 11. Defendants seek the disqualification of plaintiff’s counsel, 

John J. Okuley and the law firm of Okuley Smith, LLC, on the basis of

a conflict of interest existing between John Okuley and defendants P.

Michael Valley, II and Sharon A. Staley. For the reasons that follow,

Defendants’ Motion is GRANTED. The Court determines that an

evidentiary hearing is not necessary for the resolution of Defendants’

Motion and denies plaintiff’s request for an evidentiary hearing. See

Gen. Mill Supply Co. v. SCA Servs., Inc., 697 F.2d 704, 710 (6th Cir.

1

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 1 of 13 PAGEID #: <pageID>
1982); Dayton Bar Ass’n v. Parisi, 131 Ohio St.3d 345, at ¶ 15 (Ohio

2012) (indicating that the Ohio Supreme Court has never required an

evidentiary hearing before ruling on every motion for

disqualification). 

I. BACKGROUND

Plaintiff The Big Idea Company brings this action for trademark

infringement, unfair competition under the Lanham Act, and copyright

infringement, based on, inter alia, defendants’ use of mark “THE

PARENT CARE RESOURCE.” Complaint, Doc. No. 2, at ¶¶ 23-41. Plaintiff

is the owner of the “The Parent Care Solution” trademark, and is

represented by John Okuley and the law firm of Okuley Smith, LLC. Id.

at ¶ 24. Named as defendants are The Parent Care Resource, LLC, PMV

Management Company, Inc., Eastwind Capital, LLC, P. Michael Valley II,

Insurance Agency, Inc., Sharon A. Staley and P. Michael Valley, II.

 Defendants’ Motion seeks the disqualification of plaintiff’s

counsel on the basis of a conflict of interest existing between John

Okuley and defendants Mr. Valley and Ms. Staley. Defendants allege

that attorney Jerry K. Mueller provided them with legal services in a

matter substantially related to this case while Mr. Mueller was a

named partner with the law firm of Mueller Smith & Okuley, LLC. 

Defendants’ Motion, at 2-3. Plaintiff’s counsel, Okuley Smith, LLC,

is a successor to Mueller Smith & Okuley, LLC, and Mr. Mueller is no

longer associated with either firm. Affidavit of John Okuley (“Okuley

Affidavit”), attached to Plaintiff’s Response. 

While Mr. Mueller was with the firm of Mueller Smith & Okuley, he

performed a trademark search for defendants and gave his opinion via

2

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 2 of 13 PAGEID #: <pageID>
email that “[n]one of [the] hits appear to pose an impediment to

federal registration of the mark.” Defendants’ Motion, Exhibits A, B. 

Mr. Valley responded to Mr. Mueller’s email and stated the following:

“Can you go ahead and start the process, if you need a retainer let us

know but we would like to hire you to do this[.]” Id., Exhibit C. 

Mr. Mueller responded on the same day, requesting a $1,000 retainer

and agreeing to “start working on the [trademark] application.” Id.,

Exhibits C, D. An invoice sent to defendant Eastwind Capital, another

of the defendants named in this action, shows that the $1,000 retainer

was received by Mueller Smith & Okuley, LLC, and that $201.00 was

charged for an “online trademark registrability search.” Id., Exhibit

E. Mr. Mueller also billed Eastwind Capital for one half hour of his

time. Okuley Affidavit, at ¶ 14. There is no indication that Mr.

Mueller ever completed or submitted the trademark application. See

Defendants’ Reply, at 4. 

Plaintiff argues that no conflict of interest exists and points

to a lack of information about defendants in Okuley Smith, LLC’s

records. Specifically, plaintiff asserts that – despite having

policies in place requiring a conflict check and engagement agreement

– Okuley Smith LLC’s records do not show that a conflict check was

performed or that an engagement agreement was ever obtained for any of

the defendants. Okuley Affidavit, at ¶¶ 8-10. Also, the firm’s

records allegedly do not indicate that a trademark availability search

was performed for any of the defendants. Id. at ¶ 15. Plaintiff also

asserts that Mr. Mueller “had an unauthorized practice of maintaining

certain files on his laptop computer, or not maintaining any

3

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 3 of 13 PAGEID #: <pageID>
electronic or paper files.” Id. at ¶ 19. 

II. STANDARD

The standard for disqualifying an attorney in federal litigation

was summarized by the court in Hamerick v. Union Twp., 81 F. Supp. 2d

876 (S.D. Ohio 2000):

A motion to disqualify is the proper method for a

party-litigant to bring an issue of conflict of interest or

the breach of an ethical duty to the court's attention. 

Musicus v. Westinghouse Elec. Corp., 621 F.2d 742, 744 (5th

Cir. 1980). Confronted with such a motion, courts must be

sensitive to the competing public interests of requiring

professional conduct by an attorney and of permitting a party

to retain the counsel of his choice. Kitchen v. Aristech

Chem., 769 F. Supp. 254, 257 (S.D. Ohio 1991). In order to

resolve these competing interests, the courts must balance the

interests of the public in the proper safeguarding of the

judicial process together with the interests of each party to

the litigation. General Mill Supply Co. v. SCA Servs., Inc.,

697 F.2d 704, 711 (6th Cir. 1982).

The power to disqualify an attorney from a case is “incidental

to all courts, and is necessary for the preservation of

decorum, and for the respectability of the profession.” 

Kitchen, 769 F.Supp. at 256 (quoting Ex Parte Burr, 9 Wheat.

529, 22 U.S. 529, 531, 6 L.Ed. 152 (1824)). However, “the

ability to deny one's opponent the services of his chosen

counsel is a potent weapon.” Manning v. Waring, Cox, James,

Sklar & Allen, 849 F.2d 222, 224 (6th Cir. 1988). Motions for

attorney disqualification should be viewed with extreme

caution for they can be misused as techniques of harassment. 

Freeman v. Chicago Musical Instrument Co., 689 F.2d 715, 722

(7th Cir. 1982).

Hamerick, 81 F. Supp. 2d at 878. 

III. DISCUSSION

As a preliminary mater, it is necessary to discuss what rules are

applicable in this case. Defendants argue that Ohio Rules of

Professional Conduct 1.9 and 1.10 require that John Okuley and Okuley

Smith, LLC, be disqualified as plaintiff’s counsel in this case. 

Defendants’ Motion, at 1. Plaintiff argues that the issue of

4

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 4 of 13 PAGEID #: <pageID>
disqualification should be decided under a three-part common law test. 

Plaintiff’s Response, at 3-4. 

“The primary purpose behind the prohibition . . .

against dual representation of clients with

adverse interests is to ensure that confidences

or secrets of a client imparted to an attorney in

the course of their attorney-client relationship

will not be revealed to an adverse party or used

to the client's disadvantage.” 

OneBeacon Am. Ins. Co. v. Safeco Ins. Co., No. C-1-07-358, 2008 WL

4059836, at *2 (S.D. Ohio Aug. 25, 2008) (quoting Sarbey v. Nat’l City

Bank, 66 Ohio App.3d 18, 26 (9th Dist. 1990)). Despite previous

reliance on the common law, the United States Court of Appeals for the

Sixth Circuit now looks “to the codified Rules of Professional Conduct

for guidance” in determining whether an attorney should be

disqualified from representing a client based on a conflict of

interest. See Nat’l Union Fire Ins. Co. of Pittsburgh, Pa. v.

Alticor, Inc., 466 F.3d 456, 457 (6th Cir. 2006), vacated in part on

other grounds, 472 F.3d 436 (6th Cir. 2007). Accordingly, the Ohio

Rules of Professional Conduct govern in this district. Perkins v.

Rieser, No. 3:07-cv-325, 2012 WL 1606657, at *1 (S.D. Ohio May 8,

2012); Khan v. Cellco P'ship, No. 1:10-cv-118, 2011 WL 5042071, at *2

(S.D. Ohio Sept. 8, 2011) (citing OneBeacon, 2008 WL 4059836 at *2). 

Defendants Mr. Valley and Ms. Staley argue that Mr. Mueller

provided legal services to them in a matter substantially related to

this case while Mr. Mueller was a partner with the law firm of Mueller

Smith & Okuley, LLC. Defendants’ Motion, at 2-3. As noted supra,

Okuley Smith, LLC, is a successor to Mueller Smith & Okuley, LLC, and

Mr. Mueller is no longer associated with either firm. Okuley

5

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 5 of 13 PAGEID #: <pageID>
Affidavit, at ¶ 1. Because Mr. Mueller is no longer associated with

the firm, disqualification of John Okuley and Okuley Smith, LLC, is

mandatory in this case if Mr. Mueller would be disqualified under Rule

1.9(a) from representing plaintiff by virtue of his previous

representation of defendants, and if that disqualification is imputed

to John Okuley and Okuley Smith, LLC, under Rule 1.10(b). 

A. Ohio Rule 1.9(a)

Ohio Rule 1.9(a) provides in pertinent part:

Unless the former client gives informed consent, confirmed in

writing, a lawyer who has formerly represented a client in a

matter shall not thereafter represent another person in the

same or a substantially related matter in which that person’s

interests are materially adverse to the interests of the

former client.

Ohio R. Prof. Conduct 1.9(a). “The use of the term ‘shall’ in Rule

1.9(a) requires mandatory disqualification when those circumstances

defined therein are present.” R.E. Kramig Co., Inc. v. Resolute

Mgmt., Inc., No. 1:07-cv-658, 2009 WL 1395342, at *4 (S.D. Ohio May

18, 2009) (citing OneBeacon, 2008 WL 4059836 at *2). The term

“substantially related matter” is defined as “one that involves the

same transaction or legal dispute or one in which there is a

substantial risk that confidential factual information that would

normally have been obtained in the prior representation of a client

would materially advance the position of another client in a

subsequent matter.” Ohio R. Prof. Conduct 1.0(n). 

In the case presently before the Court, there is no question that 

defendants Mr. Valley and Ms. Staley are former clients of Mr.

Mueller. “An attorney-client relationship includes the representation

of a client in court proceedings, advice to a client, and any action

6

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 6 of 13 PAGEID #: <pageID>
on a client's behalf that is connected with the law.” Hamrick, 79 F.

Supp. 2d at 875 (citing Landis v. Hunt, 80 Ohio App.3d 662, 669-70

(10th Dist. 1992)). The test of whether an attorney-client

relationship was created is “essentially whether the putative client

reasonably believed that the relationship existed and that the

attorney would therefore advance the interests of the putative

client.” Id. (citing Henry Filters, Inc. v. Peabody Barnes, Inc., 82

Ohio App.3d 255, 261 (6th Dist. 1992)). 

Plaintiff does not dispute the fact that Mr. Mueller provided

legal services to defendants. See Plaintiff’s Response, at 7-8

(indicating that Mr. Mueller provided services to defendants and that

the exhibits submitted with Defendants’ Motion “on their face only

prove that Attorney Mueller, and Attorney Mueller alone, dealt with

the Defendants.”) Additionally, the exhibits submitted with

Defendants’ Motion establish that an attorney-client relationship

existed. Mr. Mueller performed a trademark search for defendants and

rendered his professional opinion via email that “[n]one of [the] hits

appear to pose an impediment to federal registration of the mark.” 

Defendants’ Motion, Exhibits A, B. In response, Mr. Valley stated that

they “would like to hire” Mr. Mueller; Mr. Mueller requested a $1,000

retainer and agreed to “start working on the application.” Id.,

Exhibits C, D. An invoice sent on firm letterhead to defendant

Eastwind Capital shows that the $1,000 retainer had been received by

Mueller Smith & Okuley, LLC, and that $201.00 had been charged for an

“online trademark registrability search.” Id., Exhibit E. The firm

records show that Mr. Mueller also billed Eastwind Capital for one

7

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 7 of 13 PAGEID #: <pageID>
half hour of his time. Okuley Affidavit, at ¶ 14. This Court

concludes that an attorney-client relationship existed between Mr.

Mueller and Mr. Valley and Ms. Staley because Mr. Mueller provided

legal advice to them, agreed to work for them, and charged for his

services. 

Plaintiff’s interests in this matter are materially adverse and

substantially related to the matter for which Mr. Valley and Ms.

Staley received legal advice from Mr. Mueller. Mr. Valley and Ms.

Staley received legal advice from Mr. Mueller regarding the

availability of, applying for, and registering “THE PARENT CARE

RESOURCE” mark. See Defendants’ Motion, Exhibits A-E. In this

action, plaintiff asserts claims based on defendants’ use of “THE

PARENT CARE RESOURCE” mark. Complaint, Doc. No. 2, at ¶¶ 23-41. To

prevail in this case, plaintiff will be required to prove, at a

minimum, that defendants’ use of “THE PARENT CARE RESOURCE” mark “is

likely to cause confusion, or to cause mistake, or to deceive as to

the affiliation, connection, or association of” defendants with

plaintiff, “or as to the origin, sponsorship, or approval of his or

her goods, services, or commercial activities by” plaintiff. See 15

U.S.C. § 1125(a)(1)(A). The “registrability” of the “THE PARENT CARE

RESOURCE” mark and the similarities between defendants’ mark and

plaintiff’s mark are directly at issue in this case, and they are

substantially related to the legal services Mr. Mueller provided for

defendants. Mr. Mueller performed a “registrability search” for the

mark, rendered his legal opinion as to the mark’s availability and

agreed to draft and file an application to register the trademark. 

See Defendants’ Motion, Exhibits A-D. The direct relationship between

8

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 8 of 13 PAGEID #: <pageID>
Mr. Mueller’s prior representation of defendants and plaintiff’s

claims in this case creates a substantial risk that confidential

factual information obtained by Mr. Mueller would materially advance

plaintiff’s interests. If it were Mr. Mueller who represented

plaintiff in this action, he would surely have to argue that his legal

advice to defendants regarding the mark was incorrect and that

defendants’ use of the mark infringed on plaintiff’s rights. It is

evident, based on the foregoing, that plaintiff’s interests are

adverse to defendants’ interests, and that this action involves a

matter substantially related to the matter in which Mr. Mueller

previously represented defendants. 

Finally, Mr. Valley and Ms. Staley have not consented to the

representation of plaintiff by Mr. Mueller, John Okuley, or Okuley

Smith, LLC, in this case. Accordingly, all the elements requiring

disqualification under Ohio Rule 1.9(a) are present; Mr. Mueller

would be prohibited from representing plaintiff under the

circumstances presented by this case. See R.E. Kramig Co., 2009 WL

1395342 at *4 (indicating that disqualification is mandatory when the

terms of Rule 1.9(a) are met). 

B. Ohio Rule 1.10

The imputation of a conflict of interest is governed by Ohio Rule

1.10,1 which provides in pertinent part:

1Plaintiff’s Response ignores the applicability of the Ohio Rules of

Professional Conduct. Instead, as noted supra, plaintiff relies on a threepart common law test and argues that disqualification is not warranted because

there was no attorney client relationship between John Okuley and defendants.

See Plaintiff’s Response, at 7-8. As previously indicated, however, the

United States Court of Appeals for the Sixth Circuit now looks “to the

codified Rules of Professional Conduct for guidance” in determining whether an

attorney should be disqualified from representing a client based on a conflict

9

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 9 of 13 PAGEID #: <pageID>
(b) When a lawyer is no longer associated with a firm, no

lawyer in that firm shall thereafter represent a person with

interests materially adverse to those of a client represented

by the formerly associated lawyer and not currently

represented by the firm, if the lawyer knows or reasonably

should know that either of the following applies:

(1) the formerly associated lawyer represented the client in

the same or a substantially related matter;

(2) any lawyer remaining in the firm has information protected

by Rules 1.6 and 1.9(c) that is material to the matter.

Ohio R. Prof. Conduct 1.10(b)(1),(2). 

As explained above, Mr. Mueller would be prohibited from

representing plaintiff under Rule 1.9(a) based on his previous

attorney-client relationship with some or all of the defendants. Mr.

Mueller is also no longer associated with Okuley Smith, LLC or Mueller

Smith & Okuley, LLC. Okuley Affidavit, at ¶ 20. These issues are not

disputed. Instead, plaintiff argues that no conflict of interest

currently exists, that no knowledge was retained by John Okuley or

Okuley Smith, LLC, regarding Mr. Mueller’s prior representation of Mr.

Valley and Ms. Staley, and that the files and billing records of

Okuley Smith, LLC, do not contain any information about the nature of

of interest. See Nat’l Union Fire Ins. Co., 466 F.3d at 457. “In the absence

of any Sixth Circuit authority mandating application of the” three-part common

law test, “the Court is bound to apply the Ohio Rules of Professional

Conduct.” Khan, 2011 WL 5042071 at *5. Ohio Rule 1.9(a) governs conflicts

involving “former clients” and Ohio Rule 1.10 governs the imputation of those

conflicts to a firm. By its terms, Rule 1.10 does not require that an actual

attorney-client relationship have existed between the party seeking

disqualification and the attorney sought to be disqualified. Ohio R. Prof.

Conduct 1.10(b). 

Plaintiff also argues that Mr. Mueller’s prior representation of

defendants and all confidential information obtained during that

representation have been effectively screened from other members in the law

firm. Plaintiff’s Response, at 6. Ohio Rules 1.9 and 1.10 do not, however,

provide for a screening exception under the circumstances of this case. See

Ohio R. Prof. Conduct 1.9, 1.10; Khan, 2011 WL 5042071, at *7 (“Once an

attorney is disqualified under Ohio R. Prof. Cond. 1.9, a new attorney in his

firm cannot avoid disqualification by ‘screening’ no matter how diligently.”)

(citations omitted).

10

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 10 of 13 PAGEID #: <pageID>
Mr. Mueller’s representation. Id., at ¶¶ 21-23. Although plaintiff

does not expressly make the argument, the Court construes Plaintiff’s

Response to argue that disqualification is not necessary because John

Okuley and Okuley Smith, LLC, did not know that Mr. Mueller’s

representation of Mr. Valley, Ms. Staley, or Eastwind Capital

concerned a matter substantially related to this action.

In support of this argument, plaintiff asserts that – despite the

existence of a firm policy requiring a conflict check and an

engagement agreement prior to representing a client – the records of 

Okuley Smith, LLC, do not show that a conflict check was performed or

that an engagement agreement was ever obtained for any of the

defendants. Okuley Affidavit, at ¶¶ 8-10. Also, the firm’s records

allegedly do not indicate that a trademark availability search was

performed for any of the defendants, and Mr. Mueller allegedly “had an

unauthorized practice of maintaining certain files on his laptop

computer, or not maintaining any electronic or paper files.” Id. at

¶¶ 15, 19. 

Plaintiff’s arguments actually suggest that, had firm policies

been observed, John Okuley and Okuley Smith, LLC, reasonably should

have known that Mr. Mueller’s prior representation of defendants

concerned a matter substantially related to the representation of

plaintiff in this case. Firm policies requiring a conflict search and

an engagement agreement prior to the representation of a client are

reasonable measures to prevent conflicts of interest. Had Mr. Mueller

followed firm policies, it is highly likely – given the extent of John

Okuley’s conflict check prior to accepting plaintiff as a client –

that John Okuley and Okuley Smith, LLC, would have known that Mr.

11

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 11 of 13 PAGEID #: <pageID>
Mueller’s prior representation of defendants was substantially related

to this action. 

Whether or not Mr. Mueller followed firm policy is of no

consequence. The Rules of Professional Conduct are in place to

protect clients, not attorneys, and an attorney’s failure to maintain

adequate records or to follow firm policy cannot be used as a

justification to avoid disqualification based on a conflict of

interest. See Ohio R. Prof. Conduct 1.7, Comment 1 (“The principles

of loyalty and independent judgment are fundamental to the

attorney-client relationship and underlie the conflict of interest

provisions of these rules. Neither the lawyer's personal interest,

the interests of other clients, nor the desires of third persons

should be permitted to dilute the lawyer's loyalty to the client.”);

OneBeacon, 2008 WL 4059836 at *2 (“The primary purpose behind the

prohibition . . . against dual representation of clients with adverse

interests is to ensure that confidences or secrets of a client

imparted to an attorney in the course of their attorney-client

relationship will not be revealed to an adverse party or used to the

client's disadvantage.”) (citations omitted). Additionally, John

Okuley knew or should have known – prior to the firm’s engagement by

plaintiff – that Mr. Mueller had billed defendant Eastwind Capital for

legal services. Okuley Affidavit, at ¶¶ 13, 14, 24. John Okuley also

knew, or reasonably should have known had firm policies been followed,

that Mr. Mueller had performed a “trademark registrability search” for

defendants regarding “THE PARENT CARE RESOURCE” trademark. See

Defendants’ Motion, Exhibit E (an invoice sent on firm letterhead to

defendant Eastwind Capital detailing the services Mr. Mueller

12

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 12 of 13 PAGEID #: <pageID>
provided). Given that plaintiff’s claims are predicated on

defendants’ alleged use of the “THE PARENT CARE RESOURCE” mark, and

the invoice on firm letterhead sent to defendant Eastwind Capital

indicating that Mueller Smith & Okuley, LLC, had “rendered” services

regarding “‘THE PARENT CARE RESOURCE’ Trademark,” John Okuley and

Okuley Smith, LLC, reasonably should have known that Mr. Mueller had

represented defendants in a matter substantially related to this case. 

All of the elements of Rule 1.10(b)(1) have been met. It follows

that Mr. Mueller’s disqualification must be imputed to John Okuley and

Okuley Smith, LLC, in this case. Mr. Mueller would be prohibited from

representing plaintiff under Rule 1.9(a), given his previous

professional relationship with Mr. Valley and Ms. Staley. That

disqualification must be imputed to John Okuley and Okuley Smith, LLC,

because Mr. Muller is no longer associated with firm, the firm’s

representation of plaintiff is materially adverse to defendants, and

John Okuley and the firm reasonably should have known that Mr. Mueller

represented defendants in a matter substantially related to this

action. Under the circumstances, disqualification is mandatory under

Ohio R. Prof. Conduct 1.10(b)(1). See OneBeacon, 2008 WL 4059836 at

*2. 

Accordingly, defendants’ Motion to Disqualify Counsel, Doc. No.

6, is GRANTED. 

September 14, 2012 s/ Norah McCann King 

 Norah McCann King

 United States Magistrate Judge

13

Case: 2:11-cv-01148-NMK Doc #: 15 Filed: 09/14/12 Page: 13 of 13 PAGEID #: <pageID>